THE EUROPEAN UNITARY PATENT

In 2015, Italy officially subscribed to the European patent with unitary effect and the instrument for ratifying the Agreement on a Unified Patent Court (UPC) was filed by Italy at the Council of the European Union on 10th February 2017.

The new patent system (which will be effective for European Union Member States only) will be operational upon ratification of the agreement for the establishment of the Unified Patent Court by at least 13 Contracting States, including mandatorily the three countries where most European patents are filed, namely the United Kingdom (in spite of Brexit), France and Germany. Also extra-European companies will be entitled to file a European Unitary Patent.

So far 12 countries have signed the agreement, including France, and the ratification of Germany and the United Kingdom is still lacking; however, professionals in the field assert that these States should ratify the agreement over the next few months and the start of the procedure is expected next spring. However, the effects of Brexit in this matter are to date unknown.

When it comes into force, the European Unitary Patent, namely a single patent for all Contracting States, will at any rate coexist with the European patent (which consists, after granting, of a bundle of national patents), as well as with the various national patents.

At first, the European Unitary patent will be effective only in those countries which have already ratified the Agreement on a Unified Patent Court. In order to achieve effectiveness in the other Contracting States of the European Patent Convention, the ordinary validation procedure will be required in said states.

The filing, examination and granting procedure of the European Unitary Patent will always be entrusted to the European Patent Office (EPO) and will overlap the customary procedure which European patent applications are currently subjected to. Within one month since the granting of the European patent, the patentee will have to choose whether to validate the same as unitary patent (only in the States of the Union which at the time of granting have ratified the relevant Agreement) or whether to proceed with the ordinary validation in the European States of interest.

If the patent is filed in a language which is not one of EPO’s official languages (English, French or German), it will have to be translated into an official language and a compensation regime will be applied, whereby reimbursement may be applied for, within a maximum amount, and only for small- and medium-sized businesses, individuals, non profit organisations, universities and public research institutions.

After granting, if the patent is published in English, it will be necessary to submit (but only for a transitional period of 6 years) a translation into another official language of the European Union (for example Italian), otherwise an English translation will be required if the patent has been published either in German or in French.

A single annual maintenance fee will be due to the EPO for the unitary patent, which is calculated as tantamount to the combined renewal fees of the four countries wherein most European patents have been validated. A reduction of fees is envisaged for small-sized businesses.

The new Unified Patent Court (UPC) will have exclusive jurisdiction to decide on the validity and/or infringement of a European Unitary patent.

The first-instance Unified Patent Court (UPC) comprises a central division and local and regional divisions. The central division will have its seat in Paris, with sections (currently) in London and Munich. Local and regional sections will be present to cover the various European States. Milan as well will have its own local seat.

A Court of Appeal will be established in Luxembourg and, as last instance, the European Union Court of Justice (CJEU) will be available, also in Luxembourg.

The languages used in Unified Patent Courts are different and normally envisage the use of English and the language of the country where the Court is located.

For a transitional period of three months since the starting date of the unitary procedure it will be possible, for European patents which have already been granted (even for many years), to submit an "OPT-OUT" application: through this procedure, European patents (both as regards validity and as regards infringement) will not be subjected to the new unified Court, but will remain within the jurisdiction of the national Courts of the States where the European patent has been validated.

If OPT-OUT is not applied for, all existing European patents will be subjected to the new (UPC) procedure.

For patents granted within the first seven years of activity of the UPC it will be possible to choose that a European patent should not fall within the jurisdiction of the UPC, but should remain subjected to the jurisdiction of the individual national Courts where the patent has its validity. Such option must be formally expressed by submitting a waiver to the jurisdiction of the UPC at the time of granting.

Micro- and small-sized businesses will have a 40% discount on all UPC fees.

The main considerations which should guide the owner of a European patent in choosing between the unitary patent or the European patent and, at least for a transitional period, choosing whether to accept or waive the jurisdiction of the UPC are manifold.

For this choice, the relevant costs should be assessed and it should also be considered whether a single management of the patent or the management of several national patents is preferable. However, it should always be taken into account that a unitary patent is vulnerable, since it may be invalidated through a single centralised procedure.

It is therefore of primary importance to choose the kind of jurisdiction not only based on cost considerations, but also based on the acceptability that a single decision of the Court may totally invalidate the unitary patent, rather than leave the decision to the individual national Courts.

Furthermore, it is reckoned that the matter should be decided on a case-by-case basis, although it might be recommendable to submit an "OPT-OUT" application, to be entitled to keep on addressing national Courts, since it is possible to apply for an “OPT-IN” procedure at a later time, whereas the opposite is not admissible.

When the new Unitary Patent becomes effective, our office will contact each owner of "old" European patents so that owners may express their preference about choosing opt-in or opt-out. At that time the advantages and drawbacks of the choice will be analysed in more details, directly with patent owners themselves.

Giambrocono & C. S.p.A.

Founded in 1921, we have been handling matters involving Trademarks, Patents, Designs, Copyrights, reassignment of domain names and client-appointed expert witness opinions for over ninety years. We work with over 70 collaborators in three offices and consider ourselves one of the leading Italian consulting offices in the field of Industrial Property.

Thanks to a well-tested network of correspondents we are able to work in any country worldwide.

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